Bank of America Corporation v. Robert Ruthven / Gamblin Artists Colors
Claim Number: FA1803001777747
Complainant is Bank of America Corporation (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, USA. Respondent is Robert Ruthven / Gamblin Artists Colors (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bankofamerica24.com>, registered with Eranet International Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 19, 2018; the Forum received payment on March 19, 2018.
On March 21, 2018, Eranet International Limited confirmed by e-mail to the Forum that the <bankofamerica24.com> domain name registered with Eranet International Limited and that Respondent is the current registrant of the name. Eranet International Limited has verified that Respondent is bound by the Eranet International Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bankofamerica24.com. Also on March 26, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Bank of America Corporation, is one of the world’s largest financial institutions, providing banking, investment, wealth management, and other financial products and services, including investment banking and trading. Complainant uses its BANK OF AMERICA mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 853,860, registered July 30, 1968).
2. Respondent’s <bankofamerica24.com>[i] domain name is confusingly similar to Complainant’s mark because it merely appends the number “24” and the generic top-level domain (“gTLD”) “.com” to the fully incorporated mark.
3. Respondent does not have rights or legitimate interests in the <bankofamerica24.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its BANK OF AMERICA mark in any fashion. Respondent is also not commonly known by the domain name as the WHOIS information of record lists “Robert Ruthven / Gamblin Artists Colors” as the registrant.
4. Respondent is not using the <bankofamerica24.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name in connection with an email scheme designed to infect recipients’ computers or devices with malware. Respondent also uses the domain name to redirect Internet users to Complainant’s website.
5. Respondent registered and is using the domain name in bad faith. First, Respondent has established a pattern of bad faith registration and use. Next, Respondent attempts to cause confusion between Complainant’s BANK OF AMERICA mark and the <bankofamerica24.com> domain name for Respondent’s commercial gain. Further, Respondent registered the domain name with full knowledge of Complainant’s rights in the BANK OF AMERICA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BANK OF AMERICA mark. Respondent’s domain name is confusingly similar to Complainant’s BANK OF AMERICA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <bankofamerica24.com> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the BANK OF AMERICA mark through registration with the USPTO (e.g., Reg. No. 853,860, registered July 30, 1968). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark pursuant to Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). As such, the Panel holds that Complainant has established rights in the BANK OF AMERICA mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <bankofamerica24.com> domain name is confusingly similar to Complainant’s mark because it merely appends the number “24” and the gTLD “.com” to the fully incorporated mark. The addition of a number and a gTLD do not sufficiently distinguish a domain name from a mark in which a complainant has rights. See Novartis AG v. boggs, william, FA 1570988 (Forum Aug. 25, 2014) (finding that the <freshlook2.com> domain name was confusingly similar to the complainant’s FRESHLOOK mark because the domain name contained the mark in its entirety and merely added the number “2”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Accordingly, Respondent’s <bankofamerica24.com> domain name is confusingly similar to Complainant’s mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <bankofamerica24.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent does not have rights or legitimate interests in the <bankofamerica24.com> domain name. Complainant claims, without contradiction, it has not licensed or otherwise authorized Respondent to use its BANK OF AMERICA mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for <bankofamerica24.com> lists “Robert Ruthven / Gamblin Artists Colors” as the registrant. Therefore, the Panel concludes that Respondent is not commonly known by the <bankofamerica24.com> domain name.
Next, Complainant argues that Respondent uses the domain name to pass off as Complainant through emails and by redirecting Internet users to Complainant’s own website. Use of a domain name to pass off as a complainant shows a respondent’s lack of rights and legitimate interests in a domain name. See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Forum Feb. 6, 2003) (finding no rights or legitimate interests where the respondent merely redirected the <wwwmedline.com> domain name to the complainant’s own website at <medline.com>). The Complainant has provided evidence in the record to support its contentions. Therefore, the Panel holds that Respondent uses the domain name to redirect Internet users to Complainant’s own website and to pass off as Complainant through email correspondence and holds that Respondent does not have rights and legitimate interests in the <bankofamerica24.com> domain name.
Further, Complainant claims that Respondent is not using the <bankofamerica24.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. The Panel agrees. Complainant has shown that Respondent uses the domain name in connection with an email scheme designed to infect recipients’ computers or devices with malware. Use of a domain name to facilitate the download of malicious software to users’ computers is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1211001473573 (Forum Jan. 21, 2013) (holding that because the respondent used the disputed domain name to attempt to facilitate the download of malicious software to the computers of the website’s visitors, the respondent had registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii)). Therefore, the Panel finds that Respondent’s use is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <bankofamerica24.com> domain name in bad faith. First, the evidence shows that Respondent has established a pattern of bad faith registration and use. Respondent’s past conduct of registering and using famous marks shows a pattern of registering domain names in bad faith under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). The records demonstrates that Respondent has also registered and is using multiple domain names based on well-known marks of third parties, and in particular other well-known financial institutions. The Panel agrees with Complainant and finds that Respondent registered and uses the <bankofamerica24.com> domain names in bad faith pursuant to Policy ¶ 4(b)(ii).
Next, Complainant asserts that Respondent attempts to cause confusion between Complainant’s BANK OF AMERICA mark and the <bankofamerica24.com> domain name for Respondent’s commercial gain. Using a domain name which is confusingly similar to a mark in which a complainant has right to mislead Internet users shows bad faith registration and use. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Here, Complainant has proven that Respondent is attempting to redirect web users to Complainant’s website as part of a scheme to legitimize emails that Respondent is likely sending to deliver malware or for other purposes. Thus, the Panel agrees with Complainant and finds that Respondent registered and uses the <bankofamerica24.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Respondent registered the domain name with full knowledge of Complainant’s rights in the BANK OF AMERICA mark because Respondent registered the <bankofamerica24.com> domain name using an added number coupled with Complainant’s BANK OF AMERICA mark, which is famous and familiar to countless consumers. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark . . . .”). Because the domain name incorporates Complainant’s mark in its entirety and because the mark is so well known, the Panel agrees that Respondent had actual knowledge of Complainant’s mark which supports a finding of bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankofamerica24.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 1, 2018
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